Patents & Trademarks 2016

Increasingly, companies are awakening to the importance and value of their patents and trademarks. As part of a firm’s intellectual property portfolio, patents and trademarks have a multifaceted role to play in the growth and profitability of modern organisations. These assets can help companies interact with their customers, transmitting organisational values and serving to enhance – or sometimes diminish – it’s reputation. They can open doors to other industries, keep companies ahead of the competition and boost recruitment efforts. Unquestionably, patents and trademarks have an integral role to play in corporate strategy.

UNITED STATES

Lynda Calderone

Flaster Greenberg

“The success of IP management can vary based on the size and resources of the owner. Smaller private companies without in-house counsel tend to have more difficulty, and may rely on research and marketing personnel to work with an independent law firm. The degree of integration of the IP counsel and the company figures heavily on sustainable success. Good results are generally achieved when the IP management team integrates the IP with the business strategy to achieve a good understanding of the business’ needs. This strengthens an IP portfolio through active culling of old IP, it enables clear guidance on the investment value of new ideas and key trademark properties, and does so with knowledge of the competitive landscape.”

CANADA

Peter Wells

McMillan

“There seems to be an increasing reluctance to spend money on securing and enforcing patents and trademarks. While it is understandable that businesses want to be careful with the money they spend, I’m not sure that a careful cost benefit analysis always lies behind the decision. In some industries a pipeline of patent applications is an important indicator to others in that industry that your business is investing in innovation. One new application a year over five years is much better than five applications filed around the same time five years ago. Putting a new product onto the market without spending the money to see if it can be protected by means of a patent can prevent the manufacturer from securing patent protection at a later date.”

UNITED KINGDOM

Sarah Grant

Stratagem IPM Ltd

“Many companies are realising the importance of their intellectual property (IP) estate and are managing it effectively, which is particularly important when seeking finance. Much has been done to educate financial institutions on the value of intangible assets, and we see increased scrutiny of portfolios, with a robust look at portfolio breadth and IP strategy. This can be a critical and crucial test of a company’s IP management, and is an inopportune moment for it to be found wanting. It is exceedingly difficult to pull together a coherent IP strategy if little thought has been given to the IP as the company has progressed, and a funding round is underway. Companies need to keep constantly questioning their IP portfolio to make sure it is giving them value for money and is performing a function; be it to protect a product, block a competitor or generate licence revenues.”

BELGIUM

Magali Feys

time.lex

“Some companies are of course better than others, but the general view is that there is room for improvement. Start-ups in particular tend to neglect the protection of their IP rights and the creation of an IP portfolio. This could be detrimental for the future of these startups, as investors, for example, will be very focused on the intellectual property rights chain of title and freedom to operate of these companies. Accordingly, companies should at an early stage identify their key IP rights and consider if they are adequately protected in the relevant markets the company considers exploring.”

GERMANY

Peter Chrocziel

Freshfields Bruckhaus Deringer LLP

“Those companies that understand and make use of their intellectual property rights are doing the right things to manage their portfolio effectively. However, the majority of all companies owning intellectual property rights are just catching up and starting to install the right measures and steps to monetise their portfolio. The key considerations that play a role here are by and large the understanding of what rights you own, how they apply to the market and how they can be made use of. This requires a constant monitoring both internally and externally and adjusting the structure of the portfolio accordingly.”

SWITZERLAND

Alban Shabani

Weinmann Zimmerli

“Overall, companies are increasing their efforts on the protection of their IP portfolios. However, this development concerns mostly companies that already have considerable economic success or companies whose main resource is technology, concerning patents. Those are the main market actors who invest in their patents and trademarks. On the other hand, there are still many companies of a medium or smaller size that are hesitant to invest in the protection of their intellectual property. This course of action creates many risks and in particular leads to considerable legal problems when these companies find themselves fighting against infringers. Therefore, each company, irrespective of its size, should analyse which technologies and brands are or could be key factors for their current or future economic success and should protect these assets as trademarks or patents.”

PORTUGAL

Luis Sommer Ribeiro

CCA Ontier

“Companies should proactively manage their patents and trademarks, and not let these matters fall under a secondary marketing role. They should draw up a strategy for the use of any IP rights over the short, medium and long term, as well as for future projects, in order to adequately protect the identity of products and services, such as applying for new trademarks when undertaking any restyle or rebranding. Companies with patent rights should have a parallel strategy for trademarks, taking advantage of the years of exclusivity, in order to assure that after the patent lapses, the commercial advantage is in the registered trademark. Of paramount importance is effective surveillance of any IP rights for possible infringement, so the company can initiate a timely and adequate response.”

ISRAEL

Dr Shlomo Cohen

Dr Shlomo Cohen & Co.

“While some companies manage their IP portfolios effectively, many others fail to seek professional assistance, and thus risk wasting unnecessary funds in the registration and prosecution process, or even risk losing IP rights. Proper management of IP can save significant resources. For example, when seeking global protection for a patent, one must identify and focus mainly on relevant markets in which registration and enforcement of the patent is needed, and in which the patent is likely to be granted. Also, customising the filing and prosecution process, while recognising that IP laws and regulations are not the same in different jurisdictions, concerning business method patents, 3D trademarks and so on, can save significant resources on lengthy, and sometimes fruitless, prosecution.”

SOUTH AFRICA

Charles Webster

Spoor & Fisher

“Many companies build or acquire an IP portfolio without considering how that IP will be used and without adopting a strategy in relation to each item of IP. For example, a company should consider whether it will adopt a monopolistic strategy by enforcing the item of IP against competitors to prevent competition, distribute product via a distribution network, or licence others to manufacture and sell a product. Companies should consider whether a defensive strategy aimed at ensuring the company’s freedom to operate is most appropriate in the circumstances and whether or not the most benefit would be gained by keeping its inventions secret rather than publishing these through the patenting process.”